T 0014/89 (Re-establishmentof rights/deficiency) of 12.6.1989

Summary of Facts and Submissions

I. In the course of the opposition proceedings the patent proprietor and appellant received a communication under Rule 58(5) EPC dated 13 July 1988 notifying him that no party had expressed objections to the text in which it was intended to maintain the patent. At the same time he was requested to pay the fee for printing a new European patent specification and file a translation of the amended claims in the other two official languages within three months of the communication.

II. The appellant paid the printing fee ...

III. As the appellant did not file a translation of the amended claims the European patent was revoked by a decision in accordance with Article 102(5) EPC dated 8 December 1988 notified to the appellant on 12 December 1988.

IV. The appellant filed the translations of the claims with an appeal against the said decision dated 28 December 1988 and received on 2 January 1989. He argued that by paying the printing fee it was obvious that he had also intended to file a translation of the claims; the only reason why he had not done so was that in the course of an internal reorganisation and the removals which this entailed the European Patent Office's communication dated 13 July 1988 had found its way into the wrong removal carton. He requested that allowance be made for this circumstance and that the appeal be allowed.

V. The first instance remitted the appeal to the Board of Appeal. The rapporteur drew the appellant's attention to the fact that the appropriate fee had neither been paid nor had the substantiation of the facts in support of the application been supplied, and thus the conditions were not fulfilled for an application for re-establishment of rights such as followed from the appeal dated 28 December 1988. The appellant thereupon immediately paid the re-establishment fee and filed, in substantiation of the facts in support of that re-establishment, two affidavits made before a notary by Mr. W., head of the central process engineering department which dealt with patents, and by Mrs K., the employee in charge of patent administration. In her statement Mrs K. affirms that internal reorganisation had necessitated a move, in preparation for which she had sorted and placed the files in removal cartons. For reasons she was unable to explain the communication under Rule 58(5) EPC of 13 July 1988 had in the process been put into a pile of material waiting to be filed, which was why the translation of the amended claims had not been despatched. On receipt of the decision to revoke the patent dated 8 December 1988, a search had been made for the said communication and it had indeed been found among the material awaiting filing. The head of department, Mr W., affirms in his statement that Mrs K. is known to him as a consistently reliable member of staff with responsibility for administrative processing of patents and that the temporary loss of the communication under Rule 58(5) EPC could only be attributed to an exceptional and human error on her part.

VI. The opponent made no comment on the appellant's submission.

Reasons for the Decision

1. The appeal complies with Articles 106 to 108 EPC and Rule 64 EPC and is therefore admissible.

2. Article 102(5), second sentence, EPC provides that the European patent shall be revoked if the translation of the amended claims has not been filed in due time. As the appellant had not filed the translations within the three-month period laid down in Rule 58(5) EPC, the first instance was able to revoke the patent for this reason. The decision was issued admissibly by a formalities officer in accordance with point 11 of the Notice of the Vice-President of Directorate-General 2 of the EPO dated 15 June 1984 (OJ EPO 1984, 319).

3. The patent proprietor filed the missing translations together with the appeal, requesting that the latter be allowed, as non- observance of the time limit had been due to a stroke of bad luck. The appellant was thereby evidently requesting re- establishment to enable the omitted act to be deemed to have been completed within the time limit.

4. The application for re-establishment was filed in due time. The applicant was made aware of his failure to observe the time limit for filing the translations of the amended claims on 12 December 1988, the date on which he was notified of the decision to revoke the patent. On 28 December 1988, i.e. at a very early stage in the two-month period laid down in Article 122(2) EPC, the appellant applied for re-establishment and at the same time completed the omitted act by filing the translation of the amended claims. Under Article 122(3) EPC, however, the application has two deficiencies. Firstly, the appellant did not set out the facts on which application for re-establishment relied within the two- month period laid down in Article 122(2) EPC. Secondly, he only paid the fee for re-establishment - in response to the rapporteur's communication dated 3 May 1989 - with his letter dated 9 May 1989 and received on 18 May 1989. As the time limit laid down in Article 122(2) EPC had expired two months after the removal of the cause of non-compliance with the time limit (12 December 1988) on 12 February 1989, he was actually too late through paying the fee for re-establishment and filing the substantiating facts only on 18 May 1989.

5. The Board nonetheless deems the application for re- establishment in accordance with Article 122(2) EPC to be admissible on the following grounds. The patent proprietor filed the request with the European Patent Office for re-establishment very promptly on 2 January 1989, well within the two-month time limit which expired on 12 February 1989. The EPO was thus able to ascertain within the said time limit that an application had been filed and could expect to be successful on its merits, but that it had two clear deficiencies with regard to its admissibility, i.e. the fee for re-establishment had not been paid and the facts intended as substantiation of the application had not been filed. Under such circumstances the principles of good faith governing the relations between the parties and the European Patent Office (cf. decision J 3/87 dated 3 December 1987, OJ EPO 1989, 3; decision J 2/87 dated 20 July 1987, OJ EPO 1988, 330) demand that the European Patent Office should not fail to draw the appellant's attention to obvious deficiencies in his acts. This obligation certainly exists if, as in the present case, the obvious deficiencies can be expected to be remedied within the time limit for re-establishment. If the first instance had, in a communication, pointed out to the appellant, after receiving his application for re-establishment, that it did not meet the legal requirements because the statement containing the substantiating facts and the fee were missing, the applicant would surely have remedied these deficiencies within the legal time limit for re- establishment, as he still had sufficient time - i.e. about six weeks - in which to do so. The first instance did not send the applicant such a communication. The European Patent Office's failure to issue such notification required by law must not, however, lead to a loss of rights for an applicant, who could have expected to be informed. It is therefore necessary, in order to avoid an unjustified loss of an applicant's rights, that a communication of this nature should be sent and a time limit set for remedying the deficiencies, so that they may thus be deemed to have been removed in due time within the meaning of Article 122(2) EPC. In the Board's view an applicant cannot be allowed to suffer a definitive loss of rights in proceedings before the European Patent Office just because the latter has failed to issue the necessary communication. The Office must not sit by and watch as an unrepresented patent proprietor loses a valuable right, i.e. his patent, because his application for re-establishment contains a deficiency which is obviously easy to correct. In pursuance of Article 111(1) EPC the Board of Appeal sent the required communication. The patent proprietor thereupon immediately paid the fee for re-establishment and set out the facts intended to substantiate the application for such re- establishment by submitting affidavits. The application is thereby deemed to be admissible.

6. The application is also justified, as, in spite of taking all due care necessitated by the circumstances, the patent proprietor had been prevented from observing the time limit for filing the translation of the claims with the European Patent Office. In the course of internal reorganisation and the removals this entailed, the Rule 58(5) EPC communication was put into the wrong removal carton and consequently did not reach the patent proprietor's department responsible. This fact, which led to non-observance of the time limit, constitutes an isolated mistake such as cannot be ruled out despite careful company organisation (cf. decision J 2/86 and J 3/86 dated 21 October 1986, OJ EPO 1987, 362). The conditions are therefore met for a re-establishment of rights under Article 122 EPC to enable the omitted act - the filing of the translations - to be deemed to have been completed within the time limit.

7. The granting of re-establishment of rights means that the patent proprietor is to be treated as if he had not failed to observe the time limit for filing the translations of the claims. The contested decision, which was founded on non-observance of the time limit, therefore has to be set aside.

ORDER

For these reasons, it is decided that:

1. The patent proprietor is granted re-establishment of rights to enable the omitted act - the filing of translations of the claims - to be deemed to have been completed within the time limit.

2. The impugned decision is set aside.

3. The case is remitted to the first instance for continuation of the proceedings.